USPTO Patents Application 09870801

Appln. No. 09/870,801

Amdt. dated March 26, 2004

Reply to Office action dated Sept. 26, 2003

PATENT
Customer No. 22,852
Attorney Docket No. 7451.0001-18000
InterTrust Ref. No.: IT-5.2.1.1 (US)

REMARKS / ARGUMENTS

In response to the Office action dated September 26, 2004, Applicants
respectfully request the Office to enter the following amendments and consider the
following remarks. By this response, claims 91 , 93, 94, 96, 97, 103, 121 , 123, and
126-128 have been amended. With respect to the pending claims, claims 91-128
remain pending in this application (claims 1-90 were canceled without prejudice via
preliminary amendment).

In the Office action, the Examiner: (i) rejected claims 91-95, 103-104 and
121-127 under 35 U.S.C. § 112, first paragraph, (ii) rejected claims 93, 97, 103,
123 and 128 under 35 U.S.C. § 1 12, second paragraph, (iii) rejected claims 91-127
under 35 U.S.C. § 101 as allegedly being directed to non-statutory subject matter,
(iv) rejected claims 91-96, 98-107, and 111-128 under 35 U.S.C. § 102(e) as
allegedly being anticipated by U.S. Patent No. 5,715,403 to Stefik ("Stefik"), and (v)
rejected claims 108-1 10 under 35 U.S.C. § 103(a) as allegedly being unpatentable
over Stefik in view of U.S. Patent No. 5,457,746 to Dolphin ("Dolphin").

Applicants respectfully request reconsideration of the above rejections for
the reasons set forth below.

Information Disclosure Statement

The Office has indicated that the information disclosure statement filed
06/03/2003, Paper No. 5, is not available to the examiner. Applicants are unsure if
the missing IDS refers to the Information Disclosure Statement/Notice of Litigation
filed October 31, 2002, or the Updated Notice Regarding Related Litigation dated
April 3, 2003. Applicants note, however, that neither of these submissions appears
in the U.S. Patent Office's PAIR records. Therefore, Applicants enclose herewith
(at Tabs 1 and 2, respectively) copies of these submissions as well as copies of
the stamped, returned post cards that were mailed along with both of these
disclosure statements. Both of these submissions include two types of information:
(1 ) papers from a related court proceeding, attached as exhibits or tabs, and (2)

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Appln. No. 09/870,801

Amdt. dated March 26, 2004

Reply to Office action dated Sept. 26, 2003

PATENT
Customer No. 22,852
Attorney Docket No. 7451.0001-18000
InterTrust Ref. No.: IT-5.2.1.1 (US)

other references that are provided in list format (either in a form PTO-1449, or in
the same lists provided during litigation). In an abundance of caution, all of this
information is being resubmitted herewith as follows.

With respect to the combined Information Disclosure Statement / Notice of
Litigation filed October 31 , 2002, the IDS and the Notice of Litigation (with all of the
associated documents, Exhibits A-M) are being resubmitted herewith in paper form
(1 st Attachment hereto), as they were originally submitted. Regarding the 3 pages
of references cited on the form PTO-1449, these references are being resubmitted
via CD-ROM entitled "IDS materials previously submitted on 10/31/02," attached
(2 nd Attachment hereto).

With respect to the Updated Notice of Related Litigation filed April 3, 2003, it
and all of the associated documents (Tabs 1-11) are also being resubmitted
herewith in paper form, as they were originally submitted (3 rd Attachment hereto).
Regarding Exhibits F and G to Microsoft Corporation's Patent Local Rule 4-2
Disclosure of Preliminary Claim Construction and Extrinsic Evidence (Limited to
'Mini-Markman' Claims)" (Tab 8), all of these references are cited in the
Information Disclosure Statement (form PTO-1449) being submitted herewith (on
March 26, 2004) in a separate IDS document.

Rejection of Claims 91-95 and 121-127 under 35 U.S.C. § 112, 1 st paragraph
Claims 91-95 and 121-127 stand rejected under 35 U.S.C. § 112, first
paragraph, as allegedly failing to comply with the written description requirement in
that the "description of a public portion and a private portion is not supported in the
specification."

Claims 91-95 and 121-127 also stand rejected under 35 U.S.C. § 112, first
paragraph, for allegedly failing to enable "a public portion and a private portion" in
the specification.

Applicants respectfully submit that description of a public portion and a
private portion is supported by and enabled in the specification. By way of

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Appln. No. 09/870,801

Amdt. dated March 26, 2004

Reply to Office action dated Sept. 26, 2003

PATENT
Customer No. 22,852
Attorney Docket No. 7451.0001-18000
InterTrust Ref. No.: IT-5.2.1.1 (US)

example, Applicants direct the Examiner's attention to FIG. 23, and the related
discussion in the specification, which includes examples of the layout for a load
module public header and a load module private header. See, application as filed,
pg. 353, line 6 - pg. 361 , line 24, with public/private header examples at pg. 356,
line 1 - pg. 358, line 15. Therefore, it is respectfully submitted that the claimed
public portion and private portion subject matter is supported and enabled by at
least these portions of the specification. The Examiner is invited to contact
Applicants should he need any assistance in locating additional support for a
particular claim element.

Claims 103 and 104 stand rejected under 35 U.S.C. § 112, first paragraph,
as allegedly failing to comply with the written description requirement in that the
"description of a public tag and a private tag are not supported in the specification."

Claims 103 and 104 also stand rejected under 35 U.S.C. § 112, first
paragraph, for allegedly failing to enable "a public tag and a private tag" in the
specification.

Applicants respectfully submit that such use of public tags and private tags
is supported and enabled in the written description. By way of example, Applicants
direct the Examiner's attention to the discussion appearing at pg. 219, line 6 - pg.
220, line 10 of the application as filed. Therefore, it is respectfully submitted that
the claimed subject matter is supported and enabled by at least this portion of the
specification.

Rejection of Claims 93, 97, 103, 123 and 128 under 35 U.S.C. §112, 2 nd paragraph

Claims 93 and 123 stand rejected under 35 U.S.C. § 1 12, second
paragraph, as allegedly being indefinite for failing to provide antecedent basis for
the term "the type of computer" in line 2 of claim 93, and in line 2 of claim 123.

Applicants have amended claims 93 and 123 to each recite "a type of
computer" so as to remove any need for antecedent basis. Applicants respectfully
submit that these rejections to claims 93 and 123 are thereby overcome.

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Appln. No. 09/870,801

Amdt. dated March 26, 2004

Reply to Office action dated Sept. 26, 2003

PATENT
Customer No. 22,852
Attorney Docket No. 7451 .0001-18000
InterTrust Ref. No.: IT-5.2.1.1 (US)

Similarly, claim 103 stands rejected under 35 U.S.C. § 112, second
paragraph, as allegedly being indefinite for failing to provide antecedent basis for
the term "the public tag" in line 3 of claim 103.

Applicants have amended claim 103 to recite "a public tag" so as to remove
any need for antecedent basis. Applicants respectfully submit that the rejection to
claim 103 has thereby been overcome.

Claim 97 stands rejected under 35 U.S.C. § 112, second paragraph, as
allegedly being indefinite for using a trademark to attempt to identify/describe the
operating system.

Although Applicants respectfully disagree that the usage here is indefinite,
in order to expedite prosecution Applicants have amended claim 97 to remove the
reference to a trademark, and respectfully submit that the instant rejection is now
moot.

Claim 128 stands rejected under 35 U.S.C. § 112, second paragraph, as
allegedly being incomplete for omitting essential elements, such omission
amounting to a gap between the elements.

Although Applicants respectfully disagree with the Examiner's basis for this
rejection, in order to expedite prosecution Applicants have amended claim 128 to
more clearly recite the nexus between system elements, and thus respectfully
submit that claim 128 is allowable.

Rejection of Claims 91-127 under 35 U.S.C. S 101

Claims 91-95 stand rejected under 35 U.S.C. § 101 as allegedly being
directed to non-statutory subject matter. These claims now reflect that the load
module header and the load module body are embodied on a computer-readable
medium. Accordingly, Applicants respectfully submit that this rejection has been
overcome.

Claims 96-120 stand rejected under 35 U.S.C. § 101 as allegedly being
directed to non-statutory subject matter. These claims now reflect that the

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Appln. No. 09/870,801

Amdt. dated March 26, 2004

Reply to Office action dated Sept. 26, 2003

PATENT
Customer No. 22,852
Attorney Docket No. 7451.0001-18000
InterTrust Ref. No.: IT-5.2.1.1 (US)

operating system, comprising validation programming and communications
programming, is embodied on a computer readable medium. Accordingly,
Applicants respectfully submit that this rejection has been overcome.

Claims 121-125, 126 and 127 stand rejected under 35 U.S.C. § 101 as
allegedly being directed to non-statutory subject matter. These claims now reflect
that the respective component assemblies are embodied on computer readable
media. Accordingly, Applicants respectfully submit that the rejection of these
claims has been overcome.

Rejection of Claims 91-96, 98-107 and 111-128 under 35 U.S.C. § 102(b)

Claims 91-96, 98-107, and 111-128 stand rejected under 35 U.S.C. § 102(e)
as allegedly being anticipated by Stefik.

Claim 91 recites a load module that includes a header and a body that
includes executable programming specifying that information relating to a use of
the load module be communicated to a remote site.

Applicants respectfully submit that Stefik does not teach or disclose, inter
alia, a load module that includes executable programming specifying that
information relating to a use of the load module be communicated to a remote site.
Instead, the cited portions of Stefik describe billing for the use of a digital work
(see, e.g., Office Action at page 8, citing Stefik, col. 29 lines 60-61 and col. 30,
lines 10-22). There is no indication that the digital work itself comprises a load
module including executable programming specifying that information relating to a
use of the load module be communicated to a remote site. For at least these
reasons, Applicants respectfully submit that Claim 91 is not anticipated by Stefik.

Claims 92-95 are dependent on Claim 91 , and are thus allowable for at least
the reasons set forth above in connection with Claim 91 .

Claim 96 recites an operating system that includes component assembly
programming which assembles a plurality of elements into a component.

Applicants submit that Stefik does not teach or disclose, inter alia,

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Appln. No. 09/870,801

Amdt. dated March 26, 2004

Reply to Office action dated Sept. 26, 2003

PATENT
Customer No. 22,852
Attorney Docket No. 7451.0001-18000
InterTrust Ref. No.: IT-5.2.1.1 (US)

component assembly programming which assembles a plurality of elements into a
component. Instead, the cited portions of Stefik describe printing or viewing one or
more digital works, where each digital work may have multiple parts (see, e.g.,
Office Action at page 9, citing Stefik, col. 30, lines 38-62). However, there is no
indication that the digital works that are being printed or viewed are assembled into
a component of a component assembly in the manner recited in claim 96. For at
least these reasons, Applicants respectfully submit that Claim 96 is not anticipated
by Stefik.

Claims 98-107 and 111-120 are dependent on Claim 96, and are thus
allowable for at least the reasons set forth above in connection with Claim 96.

Claim 121 recites a component assembly comprising first and second load
modules, in which at least one load module comprises executable programming
requiring the storage of audit information relating to the use of the component
assembly.

Applicants submit that Stefik does not teach or disclose, inter alia, a
component assembly that includes load module executable programming requiring
the storage of audit information relating to the use of the component assembly.
Instead, the cited portions of Stefik describe billing for the use of a digital work
(see, e.g., Office Action at page 17, citing Stefik, col. 29 lines 60-61, and col. 30,
lines 23-26). There is no indication that the digital work comprises a component
assembly or load module comprising executable programming requiring the
storage of audit information relating to the use of the component assembly. For at
least these reasons, Applicants respectfully submit that Claim 121 is not
anticipated by Stefik.

Claims 122-125 are dependent on Claim 121, and are thus allowable for at
least the reasons set forth above in connection with Claim 121 .

Claim 126 recites a component assembly comprising a load module
including executable programming requiring the storage of information uniquely
identifying a device at which the component assembly is stored.

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Appln. No. 09/870,801

Amdt. dated March 26, 2004

Reply to Office action dated Sept. 26, 2003

PATENT
Customer No. 22,852
Attorney Docket No. 7451.0001-18000
InterTrust Ref. No.: IT-5.2.1.1 (US)

Applicants respectfully submit that Stefik does not teach or suggest a load
module including executable programming requiring the storage of information
uniquely identifying a device at which the component assembly is stored, as
recited in claim 126, and, furthermore, that portions of Stefik that correspond to the
claim language have not been identified by the Examiner (e.g., where, in Stefik, a
load module including executable programming requiring the storage of information
uniquely identifying a device at which a component assembly is stored - see Office
Action at pages 18-19). Passages cited from Stefik by the Office are purported to
show executable programming specifying that information relating to a use of a
load module be communicated to a remote site (see Office Action at page 19,
citing Stefik, col. 29 lines 60-61 , and col. 30, lines 23-26). As set forth above in
connection with Claim 91 , Applicants have explained that the cited portions of
Stefik do not disclose this material. Moreover, Applicants submit that the elements
discussed in the cited portions of Stefik are not the same as a load module
including executable programming requiring the storage of information uniquely
identifying a device at which a component assembly is stored, as recited in Claim
126. For at least these reasons, Applicants respectfully submit that Claim 126 is
not anticipated by Stefik.

Claim 127 recites a component assembly comprising first and second load
modules, in which at least one of the load modules includes executable
programming requiring communicating a unique identification for a device at which
said component assembly is stored to a remote location.

Applicants respectfully submit that the Examiner has not identified where
Stefik discloses a load module including executable programming requiring
communicating a unique identification for a device at which said component
assembly is stored to a remote location (see Office Action at pages 20-21).
Instead, the Examiner cites passages in Stefik that allegedly show executable
programming specifying that information relating to a use of a load module be
communicated to a remote site (see Office Action at page 21 , citing Stefik, col. 29

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Appln. No. 09/870,801

Amdt. dated March 26, 2004

Reply to Office action dated Sept. 26, 2003

PATENT
Customer No. 22,852
Attorney Docket No. 7451.0001-18000
InterTrust Ref. No.: IT-5.2.1.1 (US)

lines 60-61 , and col. 30, lines 23-26). As set forth above in connection with Claim
91 , Applicants respectfully disagree that the cited portions of Stefik disclose this
material. However, Applicants also submit that even if Stefik did disclose a load
module including executable programming specifying that information relating to a
use of the load module be communicated to a remote site, as recited in Claim 91 ,
that element is not the same as a load module including executable programming
requiring communicating a unique identification for a device at which said
component assembly is stored to a remote location, as recited in Claim 127. For at
least these reasons, Applicants respectfully submit that Claim 127 is not
anticipated by Stefik.

Claim 128 recites a computer processing system that includes a component
assembler which assembles a plurality of elements into a component assembly.
Applicants respectfully submit that Stefik does not teach or disclose, inter alia, a
component assembler which assembles a plurality of elements into a component
assembly. Instead, the cited portions of Stefik describe printing or viewing one or
more digital works, where each digital work can have multiple parts (see, e.g.,
Office Action at page 21, citing Stefik, col. 30, lines 38-62). However, there is no
indication that the one or more digital works that are being printed or viewed are
assembled into a component assembly by a component assembler such as that
recited in claim 128. For at least these reasons, Applicants respectfully submit that
Claim 128 is not anticipated by Stefik.

Rejection of Claims 108-110 under 35 U.S.C. § 103(a)

Claims 108-110 stand rejected under 35 U.S.C. § 103(a) as allegedly being

unpatentable over Stefik in view of U.S. Patent No. 5,457,746 to Dolphin

("Dolphin").

All of the claims subject to the instant rejection are ultimately dependent on
Claim 96, and are thus allowable for at least the reasons set forth above in
connection with Claim 96.

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Appln. No. 09/870,801

Amdt. dated March 26, 2004

Reply to Office action dated Sept. 26, 2003

PATENT
Customer No. 22,852
Attorney Docket No. 7451.0001-18000
InterTrust Ref. No.: IT-5.2.1.1 (US)

Conclusion

In view of the foregoing amendments and remarks, Applicants submit that
the pending claims are in allowable form, and respectfully request reconsideration
of the rejections and the timely allowance of the claims.

Please grant any extensions of time required to enter this response and
charge any additional required fees to our deposit account 06-0916.

Finnegan Henderson Farabow

Garrett & Dunner L.L.P.
1300 I Street, NW
Washington, D.C. 20005
(202) 408-4000

Attachments:

1 st - Notice of Litigation (w/Exhibits), filed 10/31/02

2 nd - CD-ROM containing references from IDS filed 10/31/02

3 rd - Updated Notice of Related Litigation (w/Attachments) filed 4/3/03

Respectfully submitted,

FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P.

Dated: March 26, 2003

Reg. No. 38,611

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